Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA28018
`
`Filing d9-t33
`
`03/1 1/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Name
`
`Paris Chocolates, Inc.
`
`Granted to
`
`D3“?
`of previous
`extension
`
`03/13/2005
`
`P. O. Box 1281
`
`Address
`
`Washington, CT 06793-0281
`UNITED STATES
`
`Susan A. Smith
`
`Kenyon & Kenyon
`1500 K St.reet, NW Suite 700
`
`Washington, DC 20005-1257
`UNITED STATES
`
`Attorney
`information
`
`tmd0cketdc@keny0n.c0m, ssmith@keny0n.c0m,
`bmudge@kenyon.com Phone:202-220-4321
`
`Applicant Information
`
`Application No 78325927
`
`P“b::;‘i°“
`
`i09/14/2004
`
`Opposition
`Filing Date
`
`03/11/2005
`
`Opposition
`Period Ends
`
`§
`,03/13/2005
`
`t
`A 1,
`P1’ "*3"
`
`Doceira Campos D0 Jordao Ltda.
`Rodovia SP 122, 1200 Ribeirao Pires
`
`
`
`ESTTA Tracking number: ESTTA28018
`
`Filing d9-t33
`
`03/1 1/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Name
`
`Paris Chocolates, Inc.
`
`Granted to
`
`D3“?
`of previous
`extension
`
`03/13/2005
`
`P. O. Box 1281
`
`Address
`
`Washington, CT 06793-0281
`UNITED STATES
`
`Susan A. Smith
`
`Kenyon & Kenyon
`1500 K St.reet, NW Suite 700
`
`Washington, DC 20005-1257
`UNITED STATES
`
`Attorney
`information
`
`tmd0cketdc@keny0n.c0m, ssmith@keny0n.c0m,
`bmudge@kenyon.com Phone:202-220-4321
`
`Applicant Information
`
`Application No 78325927
`
`P“b::;‘i°“
`
`i09/14/2004
`
`Opposition
`Filing Date
`
`03/11/2005
`
`Opposition
`Period Ends
`
`§
`,03/13/2005
`
`t
`A 1,
`P1’ "*3"
`
`Doceira Campos D0 Jordao Ltda.
`Rodovia SP 122, 1200 Ribeirao Pires
`
`
`
`Sao Paulo, 09430-000
`BRAZIL
`
`Goodsl Services Affected by Opposition
`
`All goods and sevices in the class are opposed, namely: CEREAL-DERIVED FOOD
`BARS
`
`Attachments
`
`F1yinHawaiianNOO.pdf ( 7 pages )
`
`Signature
`
`1Susan Smith]
`
`Name
`
`Susan A. Smith
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Doceira Campos Do Jordao Ltda.
`
`78325927
`
`November ll, 2003
`
`FLYIN HAWAIIAN
`
`In re Application of
`
`Serial No.
`
`Filed
`
`For the Mark
`
`:
`
`:
`
`:
`
`:
`
`Published on September 14, 2004
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-35 13
`
`NOTICE OF OPPOSITION
`
`Paris Chocolates, Inc., a Delaware corporation having an address at 3401 Norman Berry
`
`Drive, Suite 120, Atlanta, Georgia 30344 (“Opposer”), believing that it will be damaged by
`
`registration of the mark FLYIN HAWAIIAN claimed in Serial No. 78325927 for “cereal—derived
`
`food bars” in International Class 30, hereby opposes the same.
`
`As grounds for its opposition, Opposer alleges as follows, with knowledge concerning its
`
`own acts, and on information and belief as to all other matters:
`
`The Opposed Application for FLYIN HAWAIIAN
`
`1.
`
`Applicant, Doceira Campos Do Jordao Ltda., a Brazilian corporation having an
`
`address at Rodovia SP 122, 1200 Ribeirao Pires, Sao Paulo 09430-000, Brazil, owns and/or is
`
`the applicant of record of the subject Application Serial No. 78325927.
`
`2.
`
`The Applicant is in the chocolate business and produces chocolate products.
`
`
`
`3.
`
`By the application herein opposed, Applicant is seeking to obtain registration of
`
`the alleged mark “FLYIN HAWAIIAN” for “cereal—derived food bars” in International Class 30
`
`under the provisions of the Trademark Act of 1946.
`
`4.
`
`The Applicant filed for the instant application on November 11, 2003, under the
`
`Intent to Use provisions of the Trademark Act. There is no evidence that any actual use of
`
`FLYIN HAWAIIAN by Applicant has commenced in the United States.
`
`5.
`
`6.
`
`This application was published for opposition purposes on September 14, 2004.
`
`Opposer timely filed requests for extensions of time to oppose the FLYIN
`
`HAWAIIAN application and is timely filing this Notice of Opposition within such extended
`
`period.
`
`Opposer’s Family of FLYER Marks
`
`7.
`
`Opposer is a well—known chocolatier, with manufacturing facilities in the U.S. and
`
`Switzerland. Opposer’s line of products includes high quality chocolate bars, candy bars and
`
`other confectionary products.
`
`8.
`
`Opposer’s products enjoy wide distribution throughout the U.S., including in
`
`retail and chain stores, specialty, natural, and gourmet stores, hotels, delicatessens, wine stores,
`
`and museums. Opposer’s products are also sold by mail order and through the Internet.
`
`9.
`
`Opposer’s primary marketing theme is based on flight, which is reflected by
`
`Opposer’s family of flight—related marks, including FLYER (Reg. No. 1581778), Flyer design
`
`(Reg. No. 1566190) and GOLD PLANE (Reg. No. 1597711) (collectively, the “FLYER
`
`Marks”). The FLYER Marks have been in use for over 15 years. Opposer owns broad common
`
`law and federal trademark and trade dress rights in its family of flight—related marks by virtue of
`
`its sale of goods under the marks for many years.
`
`
`
`l0.
`
`Opposer’s use of its FLYER Marks also is demonstrated by its Internet presence.
`
`Opposer has pron1inently featured its Flyer Marks on the Internet for over ten years.
`
`Furthermore, Opposer’s Flyer Marks are incorporated into Opposer’s domain names, such as
`
`www.flyerkids.com, www.flyerflyer.com, www.flyerchocolate.com and www.parisflyer.com.
`
`ll.
`
`Even Opposer’s telephone numbers focus on the FLYER mark —
`
`877 FLYER BAR, 888 PARIS FLYER; 888 FLYER FLYER; 800 USA FLYER;
`
`888 USA FLYER; 877 USA FLYER; 866 USA FLYER; 877 FLYER FLYER.
`
`12.
`
`As further examples of Opposer’s promotion of its FLYER theme, the FLYER
`
`Brand is the official bar of the Smithsonian National Air & Space Trophy and is sold in the gift
`
`shop of the National Air & Space Museum, a museum with the world's largest annual visitor
`
`attendance. Opposer sponsors the not—for—profit Flyer Flight Education Program for fifth graders
`
`and their science teachers in the schools. Opposer is involved with numerous other flight—related
`
`activities and organizations, including the International Women's Air & Space Museum, and the
`
`Ninety—Nines, a women's flight organization with 6,000 women pilots and founded by Amelia
`
`Earhart and Fay Gillis Wells.
`
`13.
`
`By virtue of Opposer’s efforts and the expenditure of considerable sums for
`
`promotional activities, and by virtue of the excellence of its products, Opposer has gained for its
`
`FLYER Marks a most valuable reputation and exceedingly valuable goodwill.
`
`
`
`Likelihood of Confusion between FLYIN HAWAIIAN and FLYER Marks
`
`14.
`
`The alleged trademark proposed for registration by the Applicant, namely, the
`
`words FLYIN HAWAIIAN, is confusingly similar to Opposer’s FLYER trademark.
`
`15.
`
`The asserted mark in Application Serial No. 78325927 sought to be registered by
`
`Applicant “so resembles a mark registered in the Patent and Trademark Office or a mark
`
`previously used in the United States by another and not abandoned,” namely Opposer’s FLYER
`
`Marks, “as to be likely when applied to the goods of Applicant, to cause confusion, or to cause
`
`mistake, or to deceive,” so that the registration of Applicant’s alleged trademark should be
`
`denied and refused in accordance with Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §
`
`l052(d).
`
`16.
`
`The asserted trademark herein is not a “trademark by which the goods of the
`
`Applicant may be distinguished from the goods of others,” namely the goods sold by Opposer
`
`under its FLYER Marks, which Opposer has used for many years prior to the filing date of
`
`Applicant’s intent to use application, and Opposer has never abandoned its trademarks, so that
`
`registration of Applicant’s alleged mark should be denied in accordance with Section 2(d) of the
`
`Trademark Act of 1946, 15 U.S.C. § l052(d).
`
`17.
`
`If the Applicant were permitted to use and register the FLYIN HAWAIIAN mark
`
`for its goods, as specified in the application herein opposed, confusion in the trade resulting in
`
`damage and injury to the Opposer would be caused and would result by reason of the substantial
`
`similarity between Applicant’s mark and Opposer’s marks. Persons familiar with Opposer’s
`
`goods would be likely to buy Applicant’s goods as and for goods offered by Opposer.
`
`Furthermore, any defect, objection or fault found with Applicant’s goods marketed under its
`
`
`
`alleged trademark would necessarily reflect upon and seriously injure the reputation that Opposer
`
`has established for its products sold under its trademarks.
`
`18.
`
`If Applicant were granted a registration for the alleged trademark herein opposed,
`
`it would obtain thereby at least the prima facie exclusive right to use said mark, which would be
`
`inconsistent with Opposer’s right to use its FLYER Marks to identify the source of and describe
`
`Opposer’s goods.
`
`19.
`
`Not only are the marks highly similar, the goods are closely related, if not
`
`identical. Applicant seeks to register its mark in the identical International Class — Class 30 — as
`
`that occupied by the Opposer’s registrations. Applicant has applied for “cereal—derived food
`
`bars,” which certainly could contain or be coated with chocolate or other “candy,” thus
`
`implicating Opposer’s registrations for “chocolate bars” and “candy bars.”
`
`20.
`
`Furthermore, as Applicant is in the chocolate business, its selection of the “cereal-
`
`derived food bars” identification was undoubtedly an attempt to circumvent and avoid a refusal
`
`based on Opposer’s FLYER Marks.
`
`21.
`
`Even if Applicant’s products are actually “cereal—derived food bars,” this product
`
`is well within Opposer’s natural zone of expansion and ongoing product development plans.
`
`Opposer always has in development stages a variety of new products under the FLYER Marks,
`
`including cereal—derived bars, organic bars, cookie bars, ice cream bars, sugar free and other bars
`
`and products as a natural extension of Opposer’s business and brands.
`
`22.
`
`Furthermore, all kinds of bars are marketed in the same locations and vie for the
`
`same shelf space and consumer dollars. There is clear crossover in the marketplace among
`
`energy, cereal—derived bars, power, nutritional, functional, cookie, ice cream, vitamin, chocolate,
`
`and candy bar brands.
`
`
`
`23.
`
`The Opposer’s and the Applicant’s goods are likely to be sold in the same
`
`channels of distribution to the same customers. Furthermore, as these types of food products are
`
`not expensive and are often purchased on “impulse,” the purchasers cannot be considered
`
`“sophisticated” purchasers. These purchasers are not likely to exercise a great deal of care in the
`
`purchasing decision and could easily be confused as to source.
`
`24.
`
`In View of the foregoing, confusion between Applicant’s alleged mark and
`
`Opposer’s marks is likely.
`
`Dilution of FLYER Mark
`
`25.
`
`Opposer’s FLYER mark is famous under the Lanham Act, specifically l5 U.S.C.
`
`§ ll25 et seq. Applicant’s alleged mark dilutes or, upon use, will dilute the distinctive quality of
`
`Opposer’s FLYER mark and potentially tarnish Opposer’s associated reputation.
`
`WHEREFORE, the Opposer prays that the Board reject application Serial No. 78325927
`
`and that registration of the mark therein sought for the goods therein specified be denied and
`
`refused, and that the Board sustain this Opposition.
`
`Please address all future communications regarding this opposition to the following
`
`attorney of record for Opposer:
`
`Susan A. Smith
`
`KENYON & KENYON
`
`1500 K Street, N.W., Suite 700
`
`Washington, D.C. 20005
`telephone:
`(202) 220-4321
`facsimile: (202) 220-4201
`e—mail: ssmith@kenyon.com
`
`
`
`Please charge the $300 filing fee and any other fees associated with this proceeding to
`
`Deposit Account 11-0600.
`
`Dated: March 11, 2005
`
`By:
`
`Respectfully submitted,
`
`s/ Susan Smith
`Susan A. Smith, Esq.
`KENYON & KENYON
`
`1500 K Street, N.W., Suite 700
`
`Washington, D.C. 20005
`telephone: (202)220-4321
`facsimile: (202) 220-4201
`e—mail: ssmith@kenyon.com
`
`Attorneys for Paris Chocolates, Inc.
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